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HISTORY 



OF THE 



INTERNATIONAL UNION 



FOR THE 



PROTECTION OF INDUSTRIAL PROPERTY 



INCLUDING 



A DISCUSSION OF THE ARTICLES OF THE UNION AND 

THEIR EFFECT UPON INDUSTRIAL PROPERTY 

OF CITIZENS OF THE UNITED STATES. 



PREPARED BY 

UNDER THE DIRECTION 0¥ 
THE COMllMISSIONEl^ OE PATENTS. 



SEPTEITIBISR 1, IHH7. 



WASHINGTON. 

GOVERNMENT PllINTINa OFFICE. 

1887. 



rj 



I 



HISTORY 



OF THE 



INTERNATIONAL UNION 



FOR THE 



PROTECTION OF INDUSTRIAL PROPERTY, 



INCLUDING 



A DISCUSSION OF THE ARTICLES OF THE UNION AND 

THEIR EFFECT UPON INDUSTRIAL PROPERTY 

OF CITIZENS OF THE UNITED STATES. 



PREPARED BY 

UNDER THE DIRECTION OP 
0- 
THE COISdCnVEISSIOlN-Eri OE , 3P^TENTS. 



SEPT^ITIBS:!! 1, 18S7. 



WAsni:N"GTo:N": 

aOVEENMENT PKINTINa OFFICE. 

1887. 
5260 



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THE INTERNATIONAL UNION FOR THE PROTECTION OF INDUS- 
TRIAL PROPERTY. 



I. History of the Convention. 

The first International Conference regarding industrial property met 
in Vienna August 4, 1873, this Government being represented by Hon, 
J. M. Thacher, Assistant Commissioner of Patents. Its object was to 
discuss the propriety of establishing a uniform pateot system in Europe, 
and to suggest the general features it should embrace. A series of 
resolutions was adopted looking to that end, and a committee was ap- 
pointed to convoke a second congress. I find nothing further regard- 
ing the acts of the committee. 

An International Congress was instituted in September, 1878, under 
the patronage of the French Government, on the occasion of the Inter- 
national Exposition at Paris. There was an elaborate programme, largely 
of papers on theoretical subjects, and a series of resolatioos was adopted 
relating to the nature of property in mechanical inventions, designs, 
and trade-marks, the means for their protection, and to treaties relating 
to them. The French Government, in response to a resolution of the 
Congress, undertook to formulate a plan for a permanent international 
union for the protection of industrial property. 

On the invitation of France a conference assembled at Paris in ]S"o- 
vember, 1880, at which the following countries were represented, either 
by their ministers at Paris or by special delegates ; Argentine Eepub- 
lic, Austria, Hungary, Belgium, Brazil, United States, France, Great 
Britain, Guatemala, Italy, Luxemburg, The E^etherlands, Portugal, 
Eussia, Salvador, Sweden, i^orway, Switzerland, Turkey, Uruguay, and 
Venezuela. 

The United States was represented by Mr. Putnam, minister to Brus- 
sels. To this conference was presented a scheme drafted by Mr. Jager- 
schmidt, a minister iileoipotentiary of France, prepared by him in pur- 
suam^e of the action of the Congress of 1878. This scheme was long 
and thoroughly discussed, the delegates all taking part except thoseof 
Great Britain and the United States. Its articles as finally adopted 
had assumed the shape of the convention proclaimed by the president 
June 11, 1887. 

The Conference again assembled at Paris March G, 1883. Meanwhile 
the project as adopted had been communicated to the several Govern- 
ments interested, had been favorably received by many of them, and 
the object of the present Conference was to sign the convention and 
thereby institute the projecjted International Union. The signatory 
l)owers were : Belgium, Brazil, France, Guatemala, Italy, The Nether- 
lauds, Portugal, Salvador, Servia, Spain, and Switzerland. 

3 



I 



Mr. .Mm ton, the riiitcd States minister to France, who was a delegate 
to this Conli'irnre, announced tliat hi.s Government had not been able 
to ^ive tiie snl)ject the consideration tliat its importance demanded, and 
tliat he conld not si;;n the convention, lie a(lde<l that the adhesion of 
the L'nited States mi^ht be ^nven at some future time if that were per- 
mitted. A spt'cial resohition was adopted enipowerin^^ the Swiss Gov- 
ernment to receive the accession of the United vStates under a certain 
reservation repirdinj;- the constitutional authority of the General Gov- 
ernment to lej^ishite re.iiardin«,^ trade-marks. 

Uetbre adjournment it was decided to hohl tlie next Conference at 
liome in iS^'t. It was postponed a year, however, in order that the 
workinjjf of the convention mi«^dit be practically tested, and did not meet 
until Ai)ril, 1880. This Conference was not couliued to representatives 
of states forming the Union, and Germany was now represented for 
the lirst time. Mr. Stallo, minister to Italy, was delegate for the United 
States, bur took no part, declaring that he assisted at the Conference 
solely (I'l rc/tnnduin, and that he should rei)ort the i)roceedings to his 
Government without binding it in any respect. 

I\Iany )>ropositions were submitted to this Conference to modify the 
text of the existing treaty, and elicited warm discussion. Great Britain 
having joined the Union in 1S84, her representatives were particularly 
active in view of the trade-mark interests other manufacturers. Addi- 
tional i)aragraphs to Articles 5 and 10 of the convention were adopted, 
but no changes were nuule to the text of the existing articles. These 
additional paragraphs are still subject to ratilicatiou. 

II. Object of the International Union. 

This object was stated by M. Tibard, French minister of agriculture 
and commerce, in an address at the opening session of the Paris Confer- 
ence of 1880, which I paraphrase rather than translate : 

We are to seek for the means to establish au International Union wbicb, without 
prejudice to the iejjjislatiou of particular states on the subject, shall have two ob- 
jects; last, to assure to the subjects of ev<Ty state the tnjoynient in every other of all 
the ri«;hts the subjects or citizens of the latter enjoy in respect to patents for inven- 
tion, (lesij^us, trade-marks, and the commercial name; and second, to establish a 
number of j^eneral and uniform provisions which all citizens of the contracting states 
shall eipially enjoy the benetit of. 

The first of these objects is further declared in Article 2 of the con- 
vention, as follows : 

The subjects or citizens of each of the contracting states .'hall enjoy, iu all the 
other states of the Union, so far as concerns patents for inventions, tratle or commer- 
cial marks, and the conunercial name, the advantages that the respective laws thereof 
at i)resent accord, or shall afterwards accord, to subjects or citizens. In consequence 
thry shall have thesauje iin»tection as these latter, and the same legal recourse against 
all infringements of their rights, under reserve of complying with the fornuilitics 
and conditions imposed upon subjects or citizens b}- the domestic legislation of each 
state. 

Tlie conditions which give rise to the needs indicated are best shown 
by a brief statement of the special features of the patent laws of some 
Euroi)ean states, showing the dithculties aliens exi)erience iu securing 
and maintaining their i)atents, and also showing the dilference between 
European systems and that of the United States. 

Generally in Europe the i)atent is granted to the first applicant. 
Novelty is made a condition, but, as there is no examination, this is left 
to be determined subsequently. Hence the patentee need not be the 
first inventor, and the possession of letters patent is not even prima 



facie evidence to that effect. The conclitions that indicate a want of 
novelty are generally determined by the courts and not by statute, but 
iu general it may be said that a prior foreign patent or publication in- 
validates the grant, even though it may have existed but a single day. 
An American, having already patented his invention at home, is barred 
from receiving protection in Great Britain, France, Germany, and in 
most if not all of the countries of Europe. 

In Europe a patent is generally subject to the payment of an annual 
tax. In France this is $20 annually. In Germany it is $12.50 for the 
first and second years, and afterwards increases annually by that amount 
during the life of the patent. In Great Britain £50 is payable before 
the expiration of the fourth year, and £100 before the expiration of the 
seventh. In Italy also there is an increasing annual tax. Everywhere 
the failure to pay these taxes when due works forfeiture of the patent. 

Forfeiture results in many countries from a failure to work the inven- 
tion within a certain prescribed period. Some require the working to 
take place actually in the countr^^, while others do not Insist upon this 
condition. The German law requires the invention to be worked in Ger- 
many within three years of the grant. In Austria-Hungary one year is 
allowed, and a delaj^ of two years entails forfeiture. The Belgian law 
requires that the invention, be worked within one year in Belgium, but 
this is not insisted upon unless it is worked elsewhere. Denmark re- 
quires the invention to be worked within one year, and continuously 
during the life of the patent. Spi^in allows a year and a day. France 
two years, and two years' suspension of the working entails forfeiture. 
Italy allows one year on patents whose term is five years, but two years 
are allowed on ail patents of longer term. These Governments are not 
all agreed as to what shall be regarded as constituting -^working"; 
some of them are satisfied if the article patented is introduced and sold ) 
in others it is required to be actually produced iu the country. Great 
Britain alone of all European Governments imposes no conditions of this 
character. 

The term of a patent begins ordinarily in Europe with the day on 
which the application is deposited. In Germany it runs from the next 
day, in Great Britain from the date of deposit of the provisional speci- 
fication. In Italy, Austria-Hungary, E:ussia, and Portugal rights as 
regards third parties begin from the date of the deposit, l3ut the term 
of the patent runs from the date of the grant. 

France imposes on the patentee another restriction unknown else- 
where, that the introduction from abroad by the patentee of articles 
similar to those protected by the x)atent shall subject it to forfeiture. 

Without further notice of the peculiar features of the various systems 
it is evident that they have a strong family likeness ; and tliat while 
patents may be secured with comparatively little difficulty and at mod- 
erate expense, with less difiiculty on account of the geueral absence of 
examinations as to novelty, there are burdensome and vexatious condi- 
tions constantly arising under which they may be invalidated. These 
conditions bear particularly hard upon aliens, and those which have 
been pointed out will show the nature of the work the Conference had 
before it. 

With us none of these vexatious conditions exist. All persons, citi- 
zen or alien, stand in the United States Patent Oifico on exactly the 
same footing; the patent is granted to the ])ersou claiming to be the 
first inventor, that allegation being supported by his oath and con- 
fronted by the results of a most rigid examination into novelty. The 
sole condition of tlie grant is that at the ex[)iration of the patent the in- 



vontion shall become i)iil)lie ])roi)erty. There are no taxes. The fees 
paid are m-ver regarded as a source of revenue, but the average reason- 
able comnensalioii for service actually rendered l)y the Patent Oftice. 
There is no (>bli;;ation to work the invention, and no restriction upon 
introducin.^- the patented article from other countries were it is manu- 
factured. There is no i)urpose to ?H«/.e anything out of the inventor. 
His patent is simi)ly a contract entered into between him and the Gov- 
ernment, whereby, in consideration of protection granted him for the sole, 
use and enjoyment of his invention for a limited period, he engages to 
give the i)ublic the lull benetit of it at the expiration of the term. 
There is not a single harassing condition or burden of tax annexed to 
this contract. 

The term of a United States i)atent always runs from the date of the 
grant; and when once granted, by virtue of the ])reliu)inary examina- 
tion the invention has undeigoue, the patent l)ecome8 evidence of title. 
Evidence not accessil)ie to the otlice at the time the examination was 
made may i>rove actual want of novelty, or fraud and misrepresentation 
may be discovered, but nothing else can defeat it. 

Another prominent feature of the American patent system is the in- 
terference i)roceeding instituted to determine ])riority between two in- 
ventors, each claiming the same ])atentable subject-matter. No other 
country makes any similar i)rovision. In fact, where there is no exam- 
ination as to novelty, the question does not arise. Two patents may be 
granted for the same invention, and in case of contest in the courts the 
earlier i)atentee has the benetit of his i)riority. In this country priority 
in date of application gives a certain advantage in an interference pro- 
ceeding, but the result of that proceeding is to award the patent to the 
party who i)roves that he was actually tirst to make the invention. 

This statement of its history and object and the existing conditions 
in Europe brings us to the convention itself, and to the International 
Union lounded upon it, of which the United States has just become a 
member. The convention will be considered article by article, with such 
comment as may be necessary to show what it accomplishes for aliens 
here and for our (atizens abroad. 

III. TuE Co^'VE^'TION: Patents. 

The convention consists of nineteen articles and a final protocol. 
These articles may be classified as follows: 

Article 1 is simply declaratory. Article 2 announces the general 
purpose of the convention and Article 3 is explanatory thereof. Article 
4 announces the nature of the rights to be conferred by the treaty with 
res])ect to all industrial i)roi)erty. Article 5 contains specific provis- 
ions relating to patents only. Articles 0, 7, 8, 0, and 10, relate to trade- 
marks and commercial names. Article II relates to temi)orary protec- 
tion of industrial projMMty at international exhibitions. The remaining 
articles relaie to matters of administration. 

Some <.f these articles require no particular comment, but for conven- 
ience all will be recited seriatim with such remarks upon each as seem 
to be necessary: 

AUTICLE 1. 

Tho Govemmeuts of lieli^iiini. of Brazil, of Spain, of Franco, of Guatemala of 
Italy, of rho Ntitherlandtj. of rortn^al, of Salvador, of Servia, and of Switzerland 
have constitiitod tbeuiseKcd into n «tate of nniou for the protection of industrial 



Article 2. 

The subjects or citizens of each of the contracting states shall enjoy, in all the 
other states of the Union, so far as concerns patents for invention, trade or commer- 
cial marks, and the commercial name, the advantages that the respective laws 
thereof at present accord, or shall afterwards accord, to subjects or citizens. In con- 
sequence they shall have the same jjroteotiou as these latter, and the same legal re- 
course against all infringements of their rights, under reserve of complying with the 
formalities and conditions imposed ui)on subjects or citizens by the domestic legisla- 
tion of each state. 

Article 2 gives to the citizens of the contracting states in respect to 
l)atents just what the law of the United States now gives them. Any 
person, citizen or alien, without regard to residence, is entitled to re- 
ceive a i)atent for his invention in the United States and to be pro- 
tected by the courts. In this connection and for the purpose of refer- 
ence hereinafter, section 4886 of the Eevised Statutes is quoted : 

Any person who has invented or discovered any new and useful art, machine, 
manufacture or composition of matter, or any new and useful improvement thereof, 
not known or used by others in this country, and not patented or described in any 
printed publication in this or any foreign country, before his invention or discovery 
thereof, and not in public use or on sale for more than two years prior to his appli- 
cation, unless the same is proved to have been abandoned, may, upon payment of 
the fees required by law, and other due proceedings had, obtain a patent therefor. 

It will be observed that there is no restriction as to citizenship or 
residence. 

Article 3. 

Are assimilated to the subjects or citizens of the contracting states, the subjects or 
citizens of states not forming part of the Union, who are domiciled or have indus- 
trial or commercial establishments upon the territory of one of the states of the 
Union. * 

This article is entirely in harmony with the law of the United States. 
Consideration of the provisions of the convention with respect to trade- 
marks is reserved for another portion of this report, but it may be re- 
marked, while upon the subject of these articles, that the United States 
statute permits registration to all owners of trade marks domiciled {i. e., 
having a place of business) in this country without regard to actual 
residence or citizenship, and. to all others if the countries in which they 
live afford similar privileges to American citizens. Apart from regis- 
tration, all persons alike, citizen or alien, are entitled to the protection 
of the courts as far as their jurisdiction extends. So far as trade-marks 
are concerned these articles bring other nations up to the United States 
standard. 

Article 4. 

Any one who shall have regularly deposited an aiiplication for a patent of inven- 
tion, of an industrial model or design, of a trade or commercial mark in one of the con- 
tracting states shall enjoy, for the purpose of making the deposit in the other States 
and under reserve of the rights of third parties, a right of priority daring the periods 
hereinafter determined. 

In consequence, the deposit subsequently made in one of the other states of the 
Union, before the expiration of these periods, cannot be invalidated by acts performed 
in the interval, especially by another deposit, by the publication of the invention or its 
working by a third party, by the sahj of copies of the design or model, by the em- 
ployment of the murk. 

The periods of priority abov(i mentioned shall be six months for patents of inveu 
tion and three months for designs or indut^trial models, as well as for trade or com- 
mercial marks. They shall be auginenucd by one month for countries beyond the 
seas. 

This article contains the substance of the convention ; or, as was re- 
marked by one of the delegates from Italy while it was under discus- 
sion in the Conference of 1880, ''the whoU^ convention is in this article." 



8 

Its meaning and lanj^'nage need to be carefully' studied. It is observed 
at once that it puts i)atents, desi-ifus, and trade-marks all on the same 
footing, as if the riglits they exi)ress were of the same and a common 
character. But, as understood in the United States, patents (includ- 
ing designs) have no common character with trade-marks. A patent 
right is limited in tiuie and exists only by virtue of the statute. A 
trade-mark right is a common law riglit and unlimited in duration. 
Having no couunon character they cannot be treated together, and the 
entire subject of trademarks as atiected by this and the other articles 
of the treaty will be considered separately. 

Translated into the customary language of the Patent Office, the first 
paragraph of Article I means that any person, who has tiled an appli- 
cation for i)atent in England, or Portugal, or Servia, or in any other of 
the contracting states, is to be allowed seven months during which he 
may tile his application in thisoftice ; and that, if he does so within that 
period, he is to be entitled to priority over any other person who may 
have tiled an ap])lication for the same invention during the interval. 
The second paragraph declares that such a deposit made within the 
prescribed time is not to be invalidated by acts performed within the 
interval such as ordinarih' in Europe will vitiate a i)atent. 

In determining to what the United States is bound by this agreement 
it is necessary to remember always that the whole convention has been 
framed exclusively upon European ideas, and that no person familiar 
with the American ])atent system has ever taken part in the Conferences. 
In Europe, as before stated, the ])atent is not necessarily granted to the 
first inventor, whereas in the United States it is granted to him only. 
In the United States the fact that im application is tiled does not imply 
that a patent will be granted, because a rigid search is first made to 
determine the (piestion of novelty. In Europe, exce])t in Germany, 
there is no such search, and the grant for i)atent follows compliance 
with the i)rescribed Ibrmalities. In Euro])e the right begins to run with 
the date of the application ; in the United States there is no relation be- 
tween these dates. Protection begins when the patent is at last granted, 
always months and often years after the date of tiling the ai)i)lication. 
Hence in Europe i)riority in making thedeimsit — in tiling the ai)plica- 
tion — is a matter of great consequeiu-e. But in the United States it is a 
matter of comi)aratively little moment. Priority in respect to the date 
when the invention was nuide is a matter of imi)ortance here; and when 
two iipi)lications contlict, or an api)licati(jn conllicts with an existing 
l)atent by claiming the same subject matter, then priority is determined 
by an interference proceeding, as provided by statute : 

Sec. 4904. Whenever au application is matle for a patent which, in the opinion 
of the Couiuiissioiicr, would interfere with any ]M'n«lintj ai^pHcatiun, or with any nn- 
expired patent, he shall i^ive nt-tice thereof to the applicants, or applicant and pat- 
entee, as Th(! case may hi', and shall direct the jirirnary «'xaniinerto proceed to de- 
termine the question of priority of inventi<ni. And the Commissioner may issue a 
patent to the party who is adjudj^ed the prior inventor, nnless the adverse party ap- 
peals from the decision of the primary examiner, or of the board of exaniiners-in-chief 
as the case may be, within such time, not less than twenty days, as the Commissioner 
shall i»rescribe. 

Other sections of the statute relate to this subject, and an elaborate sys- 
tem has gi-own up under which interference contests are conducted ; and 
there are few trii)unalsin the land whose conclusions are regarded with 
more respi'ct. The coiu'cssion of the treaty appears to have no weight 
except when such a contest arises, since by the statnte publication and 
sale and publi.- use of the invention are no bar to the grant or to the 



9 

validity of a patent, unless shown to have occurred at least two years 
prior to filing the application. 

For the better understanding of this provision it is worth while to 
notice the remarks of some of the delegates to the Conference of 1880 
while it was under discussion. 

Mr. Jagerschmidt, a French delegate, and author of the project as 
originally framed, opened the discussion by saying that when a patent 
had been granted, or a design or trade-mark deposited, a publicity 
resulted from the fact of which another person might improperly take 
advantage by hastening to acquire the ownership of the patent or of the 
design or mark in another country. The purpose of this article was to 
prevent this maneuver by giving to the first depositor a right of pri- 
ority of registration in all states. of the Union for a determined period. 
The publicity referred to results under some laws, as those of Great 
Britain and Germany, from opening to inspection the description of 
the invention before the grant of the patent. In the United States it 
is always preserved in secrecy. 

Eemarks by other delegates follow^ed, but Mr. Woerz, an Austrian 
delegate, gave a further reason for the article, which in fact appears to 
have become the predominant one. He said the Austrian law demanded 
that the invention should be novel and must not have been previously 
publisbed. He recalled that Austria had concluded a treaty with Ger- 
many, by the terms of which the publication according to the German 
law of the description of an invention jjatented in Germany was not to 
vitiate the novelty of the invention in Austria, if the inventor api)lied 
for his patent in the latter empire within three months from its publi- 
cation in Germany. With regard to the contracting states he said it 
would be necessary to examine if certain legislations require publica- 
tion of the patent, and in that case to adopt an arrangement which will 
protect the inventor's rights in a way analogous to that of the Austro- 
Gerraan treaty. 

The president, Mr. Bozerian, a French delegate, remarked that in 
France an alien will often lose his rights because, before filing his ap- 
plication there, he has taken out his patent in his own country, and 
therefore his invention is no longer novel by the terms of the French law. 
Means for removing this difficulty had been sought for in the Congress 
of 1878. He recited some of these and the objections to them, and 
added that no interest was compromised by the terms of the present 
article. 

From this discussion it is apparent that the purpose of the article is 
to secure the protection of an inventor in all countries of the Union by 
enabling them to have patents in all of a common date. 

Lest there should be any doubt on the question, a formal statement 
was presented jointly by the Italian Government and the International 
Bureau in a paper laid before the Conference at Eome in 1886, and re- 
ceived the a[>proval of the Conference. From this statement I quote 
(my own translation) as follows: 

In its spirit Article 4 means that all applications for patent wlricli shall bo filed in 
the different states of the Union within a period of six months from the date of the 
earliest ai)plicai ion are to be regarded as having been filed at that date. It is by 
this interpretation {pour ceJa) that ilie laws of different conntrics, by which absolnte 
uoveli.y of tlio invention is a condition of ))atentabilit.y, can bo maintained af'Uu- the 
accession of snch conntrics to the International Union. This view is confirmed by 
the tenor of laws enacted after tlie cc^nvention of 1883, and designed to be in har- 
mony with it. For instance, the law of Sweden and Norway reqnires that an ap- 
plication for patent made within the period pr(iscribed shall be regarded as made ai 



10 

the (late of the first application ; and the En;;lish law* provides that the i)atent granted 
on Hnch an application shall bear the date of the application liled in the foreign 
conntry. 

If, then, the deposit of the application is treated as effected in every state of the 
Union at tlic nioniciit when the first a])i)licatiou is made in one of them, there is no 
sMch tiling as iiuieriority, and each state will deliver its own jjateut as if it were 
to it that the lirst a])plication was addressed. 

This explaijation is framed on the basis of patent systems in Aviiich 
the patent runs from the date of the application. It does not exchide 
examination to determine novelty, nor the refusal of a patent for want 
of nowlty, but it assumes always that whatever time may be spent 
upon this examination the i)atent has begun to run, and its date and 
term are already lixed. It does not api)ly to a system where such an 
examination occurs before the grant can be made, and in which the 
date of the patent is months or years subsequent to that of the appli- 
cation. 

RIGHTS OF ALIENS UNDER ARTICLE 4. 

The alien coming to the United States Patent Ofhce and demanding 
bis rights under tlie treaty may have the date of filing his application 
set back to that upon w^hich he tiled his earliest api)lication in oue of 
the contracting states, but there his advantage ends. If he is alone 
before the ofhce and his case proceeds without contest with any other 
])arty, his i)atent will be granted; but he gets no earlier date, and noth- 
ing in the treaty relieves him from the conditions as to its term existing 
under section 4887, Kevised Statutes. 

Sec. 48^7. No person shall be debarred from receiving a patent for his invention or 
discovery, nor shall any i)ateut be declared invalid by reason of its having been tirst 
liatented or caused to be i)ateuted in a foreign country, unless the same has been in- 
troduced into public use in the United States for more tliau two years prior to the 
application. But every patent granted for an invention which has been previously 
patented in a foreign country shall be so limited as to expire at the same time with the 
foreign ])atent, or, if there be more than one, at the same time with the one having 
the shortest term, and in no case shall it be in force more than seventeen years. 

There is only one case in the United States Patent Office in which a 
prior date of tiling an api)lication is of any advantage. That is when, 
novelty being admitted, a contest arises between two conflicting ai)pli- 
catious. In declaring interference the party first filing his application 
has the advantage of his record date, and is in the condition of a de- 
fendant. Should no testimony be taken, the issue will be decided on 
the record dates, and priority awarded to the senior i)arty. In cases 
filed under the treaty the party last to come before the office may be 
made senior by virtue of this ])rior application elsewhere. So far as 
this slight advantage is of value, it accrues to the alien over the citizen. 
And it cannot be seen wherein any other benefit is conferred by this 
article upon alien inventors coming before the United States Patent 
Office. 

The treaty attempts to synchronize the grant of patents in the con- 
tracting states so that none may be vitiated by the anterior existence 
of another, but it fails utterly when a])])lied to our systeu]. It is not 
so much that it is at variance with ours, it is entirely outside of it. 
The United States law does already more for alien inventors than this 
treaty proposes. A ])ri()r foreign jiatent is not a bar to the grant ot a 
l)atent here (section 4887, Revised Statutes.) It limits its term, but the 
grant will not be refused nor the pafent invalidated. We give the 
patentee from a Euroi)ean country not six months nor seven mouths in 

"Act of August 25, 1683, section 10;{. 



11 

which to make application here, but a practically indefinite period, the 
whole life of his home patent. The convention in its highest iotent is 
only a step in the direction in which the United States has for many 
years led ; and Europe has to take many steps in the same direction 
before her patent system can stand on the same plane with ours, so as 
to be fairly comprehended in a common interQatiooal treaty. 

EIGHTS OF AMERICAN INVENTORS UNDER THE TREATY. 

But, looking at Article 4 from the other side, what rights does it 
secure to American ioveutors abroad? Eemembering that its object is, 
as explicitly set forth, by giving patents a common datein the contract- 
ing states to provide against their being vitiated in one by reason of 
the existence of a prior patent in another, where does it leave the Ameri- 
can inventor, who, having filed his application at home, seeks to protect 
his i n terests elsewhere ? 

At present it is the custom, facilitated by the law and practice in 
this country respecting final fees, for an applicant to file his application 
in foreign countries on the same day that his patent issues at home. 
Bj this means the duration of his domestic patent is not curtailed b^' 
virtue of the existence of a prior foreign x>atent (section 4887, Eevised 
Statutes), nor is he liable to have his foreign patent refused or invali- 
dated by reason of the invention having been previously patented or 
published at home. The practice has become thoroughly familiar, and 
is in some respects a convenience to Americans. It will continue with- 
out reference to the treaty as long as section 4887 remains on the statute 
books. Under it the American inventor has all the period during which 
his application is pending in the ofhce to prepare his case for deposit 
in the patent offices of other countries. He has the advantage of the 
careful search made at home into x>rior domestic and foreign patents 
and the existing state of the art to enlighten him as to the propriety of 
soliciting his patent elsewhere, and as to the probable commercial value 
of his foreign patents, if obtained. After he gets his notice of allow- 
ance he still has six months for business preparations, for arrangements 
to raise the money required for fees and for working his invention in 
.accordance with the laws of the several countries. And it is not till 
the expiration of tbis period that he is bonnd to file his application in 
foreign countries in order to accomplish what the treaty vainly seeks 
to secure, and have patents at home and abroad all bearing a common 
date. His patent at home will not be abridged by a prior foreign 
patent, nor will any of those abroad be vitiated by his prior patent at 
home. Foreign inv^entors applying for patents in this country employ 
the same means for their advantage. 

Under the scheme adopted by Article 4 of the convention, an Amer- 
ican inventor is allowed seven months from the date of filing his appli- 
cation at home, during which he may make his application in any of 
the contracting states of Europe. The explicit allowance of seven 
months implies a limit to that period, within which, to secure any i)ro- 
tection under the terms of the convention, the applications in the for- 
eign states must be filed. Comparatively few Ameri(;an patents are 
granted within seven months from the date of liling. An actual count 
of the issue of Augusts, 1887, shows Uiatof 4.1 patents issued, only 101) 
bad been filed within seven months. If attempts had been made under 
the terms of this convention to secure protection for the inventions dis- 
^closed in the other 2'22 ])atents, the foreign ])atents must have been 
granted prior to those at honie, and consequently must uiuler our stat- 



12 

lite lijive limited tlieir duration. If tlie i)eriod of seven iiioiitlis eom- 
nieiiced with tlie «irant of tlje ])atent at home or with the commence- 
ment of i)rotection at home, the airan^iement mi^^ht not be unsatisfactory, 
but the Hmit is strictly to seven months from depositing the applica- 
tion. The arrangement is ^ood enou<^h, as between European systems 
in wiiich the patent begins to run from the date of deposit, but it does 
not fit the American system, and cannot be adapted to it. 

As re})resentations have been publicly made that the period during 
which api)lications may be filed in the contracting states extends six 
(or seven as the case may be) months from tlie grant, and that the con- 
vention thereby rcMuoves a restriction greatly damaging to Americaii 
inventors, it is worth while to consider what was actually intended as- 
disclosed by the discussions in the Conference upon this subject. la 
the Paris Conference of 1880, this matter being under consideration, a. 
period of six months from the date of ai)plication was by some dele- 
gates thought too hnig, byotlieis too short. .Mr. Indelli (Italy) said a 
year would be too long. The only reason for allowing such a period at 
all was on account of the examining system that existed in some coun- 
tries. He thought that a i)eriod of six months Wi-s pretty long. 

Mr. Weible (Switzerland) replied that the purpose of the article is to 
prote(;t the patentee. An inventor in a countiy where a preliminary 
examination is required, will, before depositing his api)lication in an- 
other country, desire to know if his patent (at home) will be granted^ 
''Now, the examination is long; in the United States it lasts nearly a 
year." ^Ir. Weible thought for this reason a period of six months was 
not enough for patents, but a shorter period would be satisfactory for 
other branches of industrial i)roperty. 

This shows clearly that the i)erii)d is to run from the date of the ap- 
plication, and that there was at least one man in the Conference, while 
it was under discussion, who knew enough of the patent system of this 
country to discover that the proposition was not adapted to it. 

The president, Mr. Uozerian, would consent to a {)eriod of a year from 
the date of a|)plication. Among other remarks he said it did not seem 
fair to impose on an inventor the burden of taking out his patents- 
abroad until he was in condition to know if his invention could be profit- 
ably worked. A period of a year would in his opinion present little 
inconvenience and many advantages. 

Professor ljroch(Xor way) reminded the Conference that in his country 
they had preliminary examinations, and he thought if a period of six 
months was lixed upon for patents a moral i)ressure would be brought 
to bear on the examiners that would make them more prompt in their 
decisions. To those who know the condition of work in the United 
States Patent Otiice, and how with the heartiest good-will and most 
faithful and intelligent etibrt on the part of examiners the final deter- 
mination of a case may be delayed for years, this reiiiark is charming 
for its simplicity. 

These remarks of the various delegates show that, in full view of the 
fa(!t that a United States ]iatent is not granted until after a long and 
ligid examination, the Conference agreed ui)on a period of six months 
from the date of the first aj^plication within whi(!h the a])plication must 
be filed in the various contracting states. This period was extended 
to seven months to countries across the sea, giving that period to citi- 
zens of the United States in all the countries of Europe. There is a 
a wide ])ublic misap]uehension on this subject. The advantage of the 
convention to American inventors has been strongly insisted u))on for 
the reason that after the grant of their patents they had still this con- 



13 

siderable period during which they miglit file their applications in the 
contracting statos without danger to their interests by reason of the 
anterior patent at home. What has been said shows clearly that all 
notions of that kind are illusory, that the Conference meant just what 
the language of Article 4 expresses, and that no such i)rotection to 
American inventors is afforded by the convention. 

Had Article 4 been drawn so as to admit of a period of six or seven 
months from the date of the grant of the earliest patent, or from the 
da}' upon which protection begins, it would obviously be advantageous 
to the American inventor. As it stands, it is not an advantage to him, 
but a detriment. If he attempts to^avail himself of the treaty i)ro- 
cedure he must file his application abroad within seven mouths of filing 
it at home; and then in the case of more than half the patents granted 
in this country their duration will be abridged under section 4^<87, Ee- 
vised Statutes. The convention may serve the purpose of the minority 
of patentees whose patents are granted within seven months of their 
filing, but not one of such persons can have any assurance in advance 
that his grant will be made during that time. To recall a patent from 
issue after allowance is an everyday occurrence. It occurs not seldom 
after the payment of the final fee, and there are instances of its occur- 
rence when the patent was actually ready to deliver. 

The deliberate way in which Article 4 was adopted, the period in ques- 
tion fixed upon in full view of the difficulties it would present to Ameri- 
cans, indicates that the objection to it is not to be overcome by an ex- 
planation. To make it conform to the existing American system it will 
have to be amended in essential particulars ; a thing which can only be 
done at the next Conference, to be held at Madrid in 1889, and which 
can only be in force when ratified by the contracting powers. Should 
Congress see fit to amend section 4887 by repealing the final clause so 
that a prior foreign patent should no longer act to abridge the term of 
that granted at home, that also might relieve this article of its worst 
objection. This is a proposition which may fairly be brought to the at- 
tention of the legislative branch of the Government. 

AllTICLE 5. 

The introduction by the patentee, into countries where the patent has been granted, 
of articles manufactured in any other of the states of the Union shall not entail for- 
feit ure. 

The patentee, however, shall be subject to the obligation of working his patent 
conformably to the laws of the country into which he has introduced the patented 
articles. 

So far as the United States Patent Office is concerned it is in no way 
affected by this article. Its intention is to afford relief abroad to in- 
ventors from restrictions imposed by the laws of sqme of the contracting 
states. The relief is not great, since the second paragraph goes far to 
annul the privilege which the first seems to accord. 

This provision of the treaty was the subject of every warm debate iu 
both the Conferences of 1880 and 188G. In the former many delegates 
declared that the working of an invention iuH'iie country was necessary 
to keep the patent in force. These delegates represented Switzerland, 
France, Belgium, Hungary, and Austria. Many of them regarded it 
as imi)ossible for a patent to be granted, except on this condition; and 
the delegates from Switzerland, Austria, and Hungary declared in so 
many words that their GoverniiuMits could not acc-ede to the convention 
without this stipulation. The French delegates took no part in the dis- 
cussion, but the law of France was announced by the rresident to be 



14 

to the oftect that a person liavin<;- a patent in that country could not 
introduce from any other country the patented article. 

lu 188G Belgium iiroposed to modify Article 5 so that it should read : 

The owner of a pateut who works his inveutiou iu one of the states of the Union 
cannot be declared to have hjst his rights in the other for failure to work the inven- 
tion, 

A counter-proposition Avas submitted by France in which the first 
para<ira})h of Article 5 was not substantially changed, but the second 
paragraph read as follows : 

Nevertheless the patentee shall be b^nd to work his invention in the said coiiutrj' 
and to manufacture there the objects to which it applies. 

It was decided that the Conference had no power to change the terms 
of the existing convention. In the course of the debate Mr. Monzelli 
(Italy) characterized the French ])ro})Osition as "on one side protecting 
alien inventors and on the other imposing conditions impossible to ob- 
serve'' 

Both propositions having been dismissed, an additional paragraph to 
Article 5 was i^roposed by Mr. Pelletier, delegate from Tunis, in these 
words : 

Each country shall determine the sense iu which the word work {exploiter) is to be 
interpreted. 

In the discussion that followed the French delegates insisted very 
strenuously upon this ])rivi]ege, and the effect of it was thus stated by 
Mr. Monzelli, the Italian delegate who was quoted above: 

AVhon the French tribunals shall have interpreted this word according to the 
French law, that is, that the j)ateutee must establish tlie manufacture of his products 
in l>rance under penalty of the loss of his patent, then the iKTmission to import the 
l)roducts accorded by the lirst paragraph will become void. (Keport of the Confer- 
ence at Eome, p. 103.) 

The proposition of Mr. Pelletier was finally adopted, and affirms the 
French i)roposition so far as their Government is concerned. Although 
not ratified by the United States as yet, it determines the sense in which 
Article 5 is to be interpreted. Under this interj)retatiou the advantage 
given by this article to American inventors is exceedingly slight. The 
very difficulty they have hitherto experienced in maintaining their pat- 
ents in foreign countries, and particularly in France, remains just as 
before the treaty, and the discussions show that these objectionable 
conditions will be insisted upon to the letter. 

By the removal of the restriction upon the importation of the pat- 
ented article perhai)s some relief is atibrded to manufacturers who are 
comi)elled to establish their industries iu France in order to maintain 
their patents. Heretofore the introduction of machines or articles to 
serve as models or patterns was held to work forfeiture of the patent, so 
rigidly was the French law construed. This illiberal condition is now 
probably done away. 

Before passing from the subject of patents it is proper to notice the 
provisions of 

• Article 11. 

Tf>c high cT^ntracting parties engage between themselves to accord a temporary 
protection to )»ateutable inventions, to industrial designs or mod-ds, as well as to trade 
or conmiercial marks for the productions which may figure at official or officially 
recognized interiiational exhibitions. 

This article removes an obstacle which has existed to the exhibition 
of manufactured products in countries where they were not protected 



15 

by patents. It is an engagement obviously impossible to fulfill in states 
where, as in the ^Netherlands, no patent laws exist. No such provision 
for temporary protection is necessary in this country, since our statute 
explicitly admits of two years' public use of an invention during which 
an application for patent may be filed. 

IV. The Convention: Trade-Marks. 

In the United States a trade-mark is held to belong to the person who 
first adopts and uses it. In case of conflicting applications for registra- 
tioD, priority of adoption is determined by an interference proceeding. 
Hence in respect to trade-marks the same objections exist to the gen- 
eral provisions of Article 4 that have alreadj^ been discussed in connec- 
tion with patents for inventions. These need not now be further con- 
sidered. The other agreements of the convention on this subject are in 
Articles 6 to 10. They engage each contracting power to admit to de- 
posit and to protect trade-marks regularly deposited in any other state 
of the Uuion. Commercial names, not technical trade-marks, are to be 
protected without registration, and the nature of the merchandise bear- 
ing the mark is not to be an obstacle to the deposit. 

Article 6. 

Every trade or commercial mark regularly deposited in the country of origin shall 
he admitted to deposit and so protected in all the other countries of the Union. 

Shall be considered as country of origin, the country where the depositor has his 
principal establishment. 

If this principal establishment is not situated in one of the countries of the Union, 
shall be considered as country of origin that to which the depositor belongs. 

The deposit may be refused if the object for which it is asked is considered con- 
trary to morals and to public order. 

It is doubted if the Uuited States can, with propriety, conform to the 
provisions of the first paragraph of this article. The Commissioner of 
Patents is required by law (act of March 3, l8ol, sec. 3) to "decide the 
presumptive lawfulness of claim to the alleged mark"; and he will be 
guided in his decisions by the law of his own country and the adjudi- 
cations of her courts, and not by those of any other country. It is an 
actual fact that, for reasons of public policy, registration has been re- 
fused in this country to a trade-mark registered and protected in France 
(see JEx parte Eydonx, Commissioner's MS. Decisions, vol. 31, p. 5U0). 
Paragraph 4 of the final protocol is explanatory of the first paragraph 
of this article, but does not seem to relieve it of objection. 

Article 7. 

The nature of the production upon wliich the trade or commercial mark is to be 
affixed cannot in any case be an obstacle to the deposit of the mark. 

The purpose of this article was explained in the Conference of 18S0 
(see the report, p. 89) by the fact that in some countries trade-marks 
on pharmaceutical preparations are not registered, and the prei)aration 
cannot be put on sale until it has received the a])proval of the board of 
health {conseil cfkygidne). ''As the mark is absolutely independent 
of the ])r()duct it is to the advantage of the owner to be able to register 
it in advance so as to protect his rights as soon as tiie interdict is re- 
moved from the product." Since under the United States trade-mark 
laws there is no registration but for marks actually adoptcnl and in nse, 
this article has no bearing on the work of the Patent OlUce. 



IG 

It should be remarked here that iu most of the countries of Europe 
there is no i)rotection for trade-marks except by virtue of registration. 
Iu Eussia registration must be effected before the trade-mark can be 
used. This is quite in contrast with American ideas, according to 
which the right to a trade-mark comes by its adoption and use, and it 
is protected by common hiw everywhere, without regard to registration. 

Article 8. 

The commercial name shall be protected in all the countries of the Union with- 
out obligation of deposit, whether it forms part or not of a trade or commercial 
mark. 

This article is in accordance with the established practice in the 
United States. There is no provision for registration of commercial 
names, except where they are regarded as actual trade-marks, but they 
are fully protected by the courts as a great number of reported cases 
testify. (Browne on Trademarks, Chap. XII.) 

Article 9. 

Every production bearing, unlawfully, a trade or commercial mark, or a commer- 
cial name, may be seizt-d upon importation into those of the states of the Union in 
which such mark or such commercial name has a right to legal protection. 

The seizure shall take place either at the instance of the public prosecutor or of 
the interested party, coutormably to the domestic legislation of each State. 

Article 10. 

The provisions of the preceding article shall be applicable to every production 
bearing falsely, as indication of origin, the name of a stated locality, when this indica- 
tion shall be joined to a tictitious commercial name or a name borrowed with fraudu- 
lent intention. 

Is reputed interested party every manufacturer or trader engaged iu the manufact- 
ure or sale of this production when established iu the locality falsely indicated as 
the idace of export. 

The penal legislation of the United States respecting trade-marks is 
contained iu the act of August 14, 1878. This act was held invalid by 
the Supreme Court, because that of 1870 in which it depended for val- 
idity was unconstitutional, but since the enactment of the present law 
it has been regarded as in fall force. It provides for ])enalties of fine 
and imprisonment, but. does not provide for seizure of goods. Section 
249G, Eevised Statutes, authorizes the officers of customs to refuse entry 
to merchandise bearing trade-marks which simulate or copy those of 
domestic manufacturers. 

In the countries of Europe not only do the laws provide for such i)en- 
alties as tine -and imprisonment and damages to the injured party, but 
other penalties and additional safeguards are provided. In Austria 
the spurious trade-mark is suppressed and all appliances for counter- 
feiting it may be destroyed. In Belgium and Germany the goods bear- 
ing it may be destroyed. In France they may be coniiscated and the 
infringer deprived of political rights. Seizure of the goods is perfectly 
consonant with continental Euroi)ean ideas, but is absolutely unknown 
to either British or American trade-mark law. 

Y. The Convention : Administrative Provisions. 

Article 12. 

Each one of the high contracting parties engages to establish a special service of] 
industrial property and a central de|)ot for giving information to the public con- 
cerning patents of invention, industrial de-signs or models, and trade or commercial 
marks. 



i 



17 

This covers a provision for such a publication by each of the con- 
tracting- powers as is now issued weekly from the United States Patent 
Office. 

Article 13. 

An international office shall be organized under the title of "International Bu- 
reau of the Union for the Protection of Industrial Property." 

This Bureau, the cost of which shall be supported by the Governments of all the 
contracting states, shall be placed under the high authority of the superior adminis- 
tration of the Swiss Confederation, aud shall work under its supervision. Its pow- 
ers shall be determined by common accord between the states of the Union. 

Article 14. 

The present convention shall be submitted to periodical revisions for the purpose 
of introducing improvements calculated to perfect the system of the Union. 

With this object conferences shall take place successively in one of the contracting 
states between the delegates of said states. 

Article 15. 

It is understood that the high contracting parties respectively reserve the right 
to make separately, between themselves, special arrangements for the protection of 
industrial property so far as these arrangements shall not interfere with the provis- 
ions of the present convention. 

Articles 13 and 14 need no comment. Article 15 recognizes the right 
of the contracting states to make special arrangements between them- 
selves for the protection of industrial property, and it is understood 
That treaties such as now exist between this and many European Gov- 
ernments are to continue in force. 

Article 16. 

The states that have not taken part in the present convention shall be admitted 
to adhere to the same upon their application. 

This adhesion shall be notified through the diplomatic channel to the Govern- 
ment of the Swiss Confederation and by the latter to all the others. 

It shall convey, of full right, accession to all the clauses and admission to all the 
ad^ outages stipulated by the present convention. 

Article 17. 

The execution of the reciprocal engagements contained in the present convention 
is subordinated in so far as needful to the accomplishment of the formalities and rules 
established by the constitutional laws of such of the high contracting parties as are 
bound to ask the application thereof, which they agree to do within the shortest de- 
lay possible. 

Article 17, very obscure in the English translation, is understood to 
mean that, so far as existing legislation in any country requires modifi- 
cation in order to fulfill the engagements of the convention, their ex- 
ecution is subordinate to such changes in the law as may be needful j it 
remains in abeyance 5 but the Government agrees to recommend such 
changes without delay. This Government having become a party to 
the Union, it now becomes the duty of the proper officer (the President, 
the Secretary of the Interior, or the Commissioner of Patents) to propose 
such amendments to the patent and trade- mark laws as may be necessary 
to give full force to the convention, and for the Commissioner ot* Patents 
to modify the rules of his office wherever they need to be changed to 
conform to it. 

Article 18. 

The present convention shall bo put into execution within a month after exchange 
of ratifications, and shall remain in force during a period of time not detenninod until 
the expiration of one year from the day upon which the denunciation shall be n\iuh\ 

This denunciation sliall be addressed to the GovornnuMit (^npoworcd to receive ad- 
hesions. It shall only produce its elfect as regards the state making it, the conven- 
tion remaining executory for the other contracting parties. 

52G0 9^ 



18 

Uuder this article any Government finding the convention not to its 
advantage may withdraw from the Union. Salvador, one of the orig- 
inal signatory powers, has already done so. 

Article 19. 

The present convention shall be ratified, and the ratifications shall be exchanged 
at Paris within the period of one year at the latest. 

Appended to the convention is a final protocol, intended to explain 
some of the provisions of the above articles, and to determine some mat- 
ters of administration not included in them. It is as follows : 

FINAL PROTOCOL. 

On proceeding to the signature of the convention concluded this day between th<* 
Governments of Belgium, Brazil, Spain, France, Guatemala, Italy, The Netherlands, 
Portugal, Salvador, Servia, and Switzerland lor the protection"^ of industrial prop- 
erty, tbe undersigned plenipotentiaries have agreed on the following: 

(1) The words industrial property are to be understood in their widest acceptation 
in the sense that they apply, not only to the productions of industry properly so 
called, but equally to the productions of agriculture (wines, grains, fruits, cattle,&c.) 
and to mineral productions used in comm«rce (mineral waters, <fec.). 

(2) Under the name patents af invention are included the various classes of indus- 
trial patents granted by the laws of the contracting states, such as patents of im- 
portation, patents of improvement, &c. 

{'S^ It is understood that the final provision of Article 2 of the convention shall in 
no respect infringe upon the laws of each of the contracting states so far as concerns 
the procedure before the courts and the competence of the said courts. 

(4) Paragraph 1 of Article 6 is to be understood in the sense that no trade or com- 
mercial mark shall be excluded from protection, in one of the states of the Union, 
by the mere fiict that it may not satisfy, in respect to the signs composing it, the 
conditions of the laws of this state, provided that it does satisfy, in this regard, the 
laws of the country of origin, and that it has been, in this latter country, duly de- 
posited. Saving this exception, which concerns only the form of the mark, and under 
reservation of the provisions of the other articles of the convention, the domestic leg- 
islation of each of the states shall receive its due application. 

In order to avoid all misinterpretation, it is understood that the use of public ar- 
morial bearings and decorations may be considered contrary to public order in the 
sense of the final paragraph of Article 6. 

(5) The organization of a special service of industrial property mentioned in Arti- 
cle 12 shall include, as far as is possible, the publication in each state of an official 
])eriodical. 

(6) The common expenses of the International Bureau created by Article 13 shall 
in no- case exceed yearly a sum total representing a mean of 2,000 francs for each con- 
tracting state. 

In order to determine the contributory share of each of the states in this sum total 
of expenses, the contracting states, and those who may hereafter adhere to the 
Union, shall be divided into-six classes, each contributing in proportion of a certain 
number of units, namely: First class, 25 units: second class, 20 units; third class, 
15 units; fourth class, ,5 units ; fifth class, 3 units. 

These coefficients shall be multiplied by the number of the states of each class, 
and tbe sum of the products thus obtained shall furnish the number of units by which 
the total expense is to be divided. The quotient will give the amount of the unit ot 
expense. 

The contracting States are classified as follows in respect to the division of the ex- 
penses : 

First class: France, Italy. 

Second class: Spain. 

Third class : Belgium, Brazil, Portugal, Switzerland. 

Fourth class : Netherlands. 

Fifth class : Servia. 

Sixth class: Guatemala, Salvador. 

The Swiss Government shall snpervise the expenditure of the luternat.oual Bureau, 
make the necessary advances, and state the annual account, which shall be communi- 
cated to all the other Governments. 

The International Bureau shall collect information of every kind relating to the 
protection of industrial property, and shall compile from it general statistics, which 



19 

■shall be transmitted to all tlie Governments. It shall occupy itself with examina- 
tions of general utility which may be of interest to the Union, and shall publish, 
with the assistance of the documents put at its disposal by the various Governments, 
a periodical in the French language on questions which concern the object of the 
Union. 

The numbers of this periodical and all the documents published by the Interna- 
tional Bureau shall be partitioned among the Governments of the states of the Union 
in the proportion of the number of contributory units above mentioned. 

The copies and supplementary documents which may be requested either by the 
said Governments or by corporations or private persons shall be paid for separately. 

The International Bureau must always hold itself at the disposal of the members ot 
the Union in order to furnish them on questions relating to the international service 
of industrial i>roperty with such special information as they may need. 

The Government of the country where the next Conference is to be held shall pre- 
pare, with the assistance of the International Bureau, the work of the said Con- 
ference. 

The director of the International Bureau shall be present at the sessions of the Con- 
ferences and shall take part in the discussions without voting. 

He shall make an annual report on its management, which shall be communicated 
to all the members of the Union. 

The official language of the International Bureau shall be the French language. 

(7) The present final pmctocol, which shall be ratified at the same time as the 
convention concluded this day, shall be considered as forming an integral part of 
that convention, and shall have the same force, value, and duration. 

The sixth paragraph of this protocol indicates the basis of classifi- 
catioD adopted in assessing the expenses of the International Bureau. 
On the accession of Great Britain she was placed in the first class along 
with France and Italy, and our Government has been placed in the 
same clasp. 

VI. Legislation required. 

Congress must provide by appropriation for defraying the share ot 
the United States in maintaining the International Bureau. For this 
about eight hundred dollars is required annually. 

Provision should also be made for sending a competent delegate to 
the next Conference. Heretofore our ministers at Paris, Brussels, and 
Rome have been delegated to represent this Government. In future, 
if we are to remain in the Union, it is of the first importance that a 
person familiar with our jiatent system, and capable of representing 
both the Patent Of&ce and the interests of American inventors and 
manufacturers, should be selected for that duty and adequate means 
provided for his compensation and expenses. Great Britain sent to the 
last Conference the executive head of her Great Seal Patent Office and 
two experts to look after her interests. 

It should be submitted to Congress whether section 4887, Revised 
Statutes, shall not be amended by repealing the last clause. 

It is proper also to consider whether the spirit of Article 2 of the con- 
vention does not require amendment of section 4902, Revised Statutes. 
The privilege of filing a caveat for an uncompleted invention is now re- 
stricted to citizens and to aliens who have resided one year in the United 
States and made oath of their intention to become citizens. This sec- 
tion contains the onl3^ discrimination against foreigners that is to be 
found in our patent law, and the i)rivilege might very reasonably be 
extended to citizens, subjects, and residents of all the states of the Inter- 
national Union. Some change in the trade- mark law is necessary to 
conform to Article 6, and means must be provided by law for carrying 
into effect the requirements of Articles 9 and 10, relating to the seizure 
of goods bearing spurious trade-marks, or commercial names, or false 
indications of origin. 



20 
VII. Changes in Office Practice. 

Applications for ineolianical and design patents and for trade-mark 
registration, presented under the treaty, are to be regarded as if filed 
on the date on which the first application for the same invention was 
filed in any of the contracting states. 

llule Oii gives j^recedence to ai)plications for patent for inventions al- 
ready i)atented abroad. This rule must be amended so as to give more 
than precedence in examination. It must give an actual prior date ot 
application, with whatever advantages come from it, such as the rela- 
tive position of the parties in an interference. It will be for the Com- 
missioner to consider what evidence he shall require to the fact that an 
application has been deposited in the foreign country. He should cer- 
tainly require something more than the applicant's allegation to that 
eftect. 

In order to furnish the information called for by the International 
Bureau, such changes should be made in keeping the accounts of the 
office as will separate the sums received for applications for mechanical 
patents, for design patents, and for registration of trade-marks. 

It would be desirable to commit to some person or division the work 
of preparing the various reports and correspondence called for by the 
International Bureau, and the custody of its documents. As the French 
is made the official language of the Bureau, the person to whom this 
work is committed must necessarily be proficient in that language. 



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LIBRftRY OF CONGRESS 
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